Type: Law Bulletins
Date: 04/16/2012

Phased Implementation of the America Invents Act

The America Invents Act (the “Act”) was signed into law on September 16, 2011, but only a limited number of sections of the Act were implemented on that date or even shortly thereafter.  Some of the more significant sections will not be implemented until September 16, 2012 and those sections related to first-to-file will not be implemented until March 16, 2013.  So there is time for businesses to evaluate and plan for the implementation of many sections of the Act.  A breakdown follows of the sections implemented in each of the three time periods:

Those sections that were implemented on September 16, 2011 or shortly thereafter include:

  • Section 5 –  Defense to infringement Based on Prior Commercial use
  • Section 6 –  New Standards for Inter Partes Reexamination
  • Section 11 –  
    • Fee Changes
    • 15% surcharge (9/26/11)
    • Electronic Filing Incentive (11/15/11)
    • Prioritized Examination (9/26/11)
  • Section 14 –  Tax Strategies Deemed within the Prior Art
  • Section 15 –  Best Mode Requirement
  • Section 16 – Virtual Marking and False Marking
  • Section 17 – Advice of Counsel
  • Section 19 –
    • Jurisdiction and Procedural Matters
    • Joinder of Parties

 The following sections will be implemented on September 16, 2012:

  • Section 4 –  Inventor’s Oath and Declaration Changes
  • Section 6 –  
    • Inter Partes Review (Replacing Inter Partes Reexamination)
    • Past Grant Review
    • Citation of Prior Art and Statements
  • Section 8 –  Pre-issuance Submissions by Third Parties
  • Section 12 –Supplemental Examinations to Consider, Reconsider or Correct Information
  • Section 18 – Transitional Program for Covered Business Method Patents

The first-to-invent section 3 will be implemented on March 16, 2013.

With the implementation of some of the most significant changes to the U.S. patent law not occurring until September 16, 2012 and even later there is plenty of time to review those changes and plan for any changes in your business strategy before these sections are implemented. 

Please contact one of the patent lawyers at Taft with any questions you may have regarding the America Invents Act.

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